Exhibit 10.30
CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
ALLIANCE AGREEMENT
This Alliance Agreement (the
“Agreement”) is made the 16th day of June, 2003
(the “Effective Date”) between:
BETWEEN
ALIEN TECHNOLOGY CORPORATION
(“ALIEN”) a
company organized and existing under the laws of California, with a
place of business at 18220 Butterfield Blvd, Morgan Hill, CA 95037,
represented by Stavro Prodromou, in his quality of President and
Chief Executive Officer,
On the one hand,
AND
STMicroelectronics NV
(“ST”) a
company organized and existing under the laws of the Netherlands,
with a place of business at WTC Schiphol Airport Amsterdam,
Schiphol Boulevard 265, 1118 BH Schiphol Airport, the Netherlands,
acting for the purposes of this Agreement through its Swiss Branch
with offices at 39, chemin du Champ-des-Filles, 1228
Plan-les-Ouates, Geneva, Switzerland, represented by Carlo Bozotti,
in his quality of Corporate V.P.,
On the other hand.
Collectively referred to as the
“Parties” or individually as the
“Party”.
RECITALS
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1.
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ST and ALIEN
are both active sponsors of the Auto-ID Center created by the
Massachusetts Institute of Technology (“MIT”) and share
its vision of a common specification to drive mass adoption of
low-cost RFID as a next-generation Auto-ID solution;
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2.
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ALIEN has
developed high-performance, low-cost RFID products (IC, tags, and
reader) which operate according to the Auto-ID Center’s Class
1 specification;
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 1
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
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3.
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ST designs,
develops, manufactures and markets a wide variety of semiconductor
integrated circuits and discrete components, including in
particular various non-volatile memories, smart card chips and
other memory-based special function ICs; In particular, ST has
developed a full portfolio of contactless memories and readers
notably based on 13.56Mhz protocols and set-up cost effective
manufacturing facilities to enter this cost driven
market.
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4.
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ST and ALIEN
desire to leverage each other’s expertise, technology, and
manufacturing capabilities in order to gain a substantial
leadership position in the field of low-cost, high-performance RFID
products which operate according to the Auto-ID Center
specifications, such as additional Class 1 ICs, Class 2 ICs, RFID
inlays and RFID readers for the mutual advantage of ST and
ALIEN;
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5.
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ST and ALIEN
are both committed to accelerating the growth and driving mass
adoption of the low-cost RFID as a next-generation Auto-ID
solution, and are interested in leveraging the strengths of both
companies to help make this happen;
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6.
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ST and ALIEN
desire to define the general framework under which:
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a.
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the Parties
will cooperate in the design and development of RFID products,
based on ST process technology, ST non volatile memories expertise
and know how in the field of contactless memories and readers, that
will operate in accordance with the Auto-ID Center specifications
and future evolutions; and
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b.
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ST will
manufacture and supply to ALIEN as well as to third parties such
RFID products; and
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c.
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the Parties
will cooperate in the marketing of such RFID products with the
mutual goal of accelerating adoption of low-cost RFID in order to
build manufacturing volume rapidly and to thereby drive down
manufacturing costs. This activity is expected to include joint
marketing to individual customers, as well as industry marketing to
broader audiences; and
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d.
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The Parties
will collaborate to support the worldwide adoption of the Auto-ID
Center’s specifications as the standard platform for the
deployment of the RFID technology worldwide. This activity is
expected to focus in particular on the UHF and microwave frequency
bands; and
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e.
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The Parties
will cooperate in the advancement and implementation of low-cost
RFID tag manufacturing techniques best suited to meet the demands
of the market in the near-, medium-, and long-term, according to
the manufacturing volumes required. This cooperation is expected to
leverage ST’s low-cost manufacturing capabilities and
infrastructure and ALIEN’s low-cost, high-volume IC packaging
and tag assembly approaches.
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 2
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
NOW, THEREFORE, in furtherance of the foregoing Recitals and in
consideration of the mutual covenants and obligations set forth in
this Agreement, the Parties agree as follows:
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 3
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
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1
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Establishment of Alliance
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ALIEN and ST hereby form an alliance
under which the Parties will cooperate in the design, development
and marketing of certain RFID products - that are designated as
“Alliance RFID Products” and defined in Paragraph 4.2
of this Agreement - for sales by ALIEN and ST, individually or
jointly, under terms and conditions to be mutually agreed upon by
the Parties in specific Project Agreements. As a part of this
Alliance, ST will serve as the exclusive manufacturer of such
Alliance RFID Products and ST will sell and ALIEN will purchase
such Alliance RFID Products under terms and conditions to be
mutually agreed upon by the Parties in specific Project Agreements.
Also as a part of this Alliance, the Parties will jointly promote
AutoID compliant devices for a fast large volume deployment
worldwide according to terms and conditions to be mutually agreed
upon by the Parties in a specific Project Agreement.
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2
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Relationship
between Alliance Agreement and Project Agreements.
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This Alliance Agreement constitutes
the framework defining the terms and conditions for the Alliance.
Specific Alliance RFID Products joint development activities,
manufacturing and supply activities, and marketing efforts
(“Projects”) may be launched by the Alliance. Projects
will be subject to the terms and conditions established in
corresponding specific Project Agreements that will be titled as
either “Development Agreement”, “Manufacturing
and Supply Agreement”, or “Marketing Agreement”
depending on the nature of the activities governed by these Project
Agreements. This Alliance Agreement establishes the contents of
future Project Agreements and default provisions therefore. Any
deviation in a Project Agreement from the framework established in
this Alliance Agreement should be identified clearly in the Project
Agreements. If any provision in a Project Agreement is in conflict
with a provision in this Alliance Agreement, the provision in the
Project Agreement controls.
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3
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Intellectual
Property Definitions
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3.1
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“Technology” means developments, ideas, designs, inventions,
information, know-how, technology, both tangible and intangible,
and Intellectual Property Rights.
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3.2
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“Intellectual Property
Rights” means
(a) all Patent Rights, (b) all United States and foreign
semiconductor mask work rights and registrations for such rights,
and (c) all copyright rights and all other literary property
and author rights, whether or not copyrightable, and all copyrights
and copyrighted interests, including any renewals thereof, and
(d) rights relating to the protection of trade secrets and
confidential information, and
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 4
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
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(e) any right analogous to those
set forth herein and any proprietary rights relating to intangible
property.
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3.3
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“Patent Rights”
means all United States and foreign
patent and application for patent, industrial models, industrial
designs, utility models, certificates of invention, and other
indicia of invention ownership, including any such rights granted
upon reissue, division, continuation or continuation-in-part
applications.
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3.4
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“Background Technology”
of a Party means any and all
Technology that such Party (i) either (a) owned or
controlled prior to the Effective Date of this Agreement or of the
relevant Project Agreement; or (b) develops or acquires
ownership or control of, during the term of this Agreement or of
the relevant Project Agreement but outside the scope of activities
pursuant to this Agreement or the relevant Project Agreement, and
(ii) in each case, that is used in conjunction with the
specific Project, whether or not incorporated into an Alliance RFID
Product.
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3.5
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“Foreground Technology”
of a Party means any and all
Technology that is developed or conceived solely by employees of
that Party during work within the scope of and pursuant to this
Agreement or the relevant Project Agreement, whether or not
incorporated into an Alliance RFID Product.
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3.6
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“Joint
Foreground Technology” means any and all Technology that is developed
or conceived either (a) jointly by ALIEN and ST employees
during work within the scope of and pursuant to this Agreement or
the relevant Project Agreement, or (b) by employees of one of
the Parties arising out of or as a result of work done under this
Agreement or the relevant Project Agreement and such Foreground
Technology is based on the other Party’s proprietary
Foreground or Background Technology or on jointly developed or
conceived Joint Foreground Technology in the meaning of
(a) above.
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3.7
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“FSA
Technology” means
the materials, equipment and processes required to perform
Alien’s “Fluidic Self Assembly” approach to
placing shaped integrated circuits, called NanoBlock™ ICs,
into rolls of plastic film and forming interconnects to those ICs,
to the extent constituting ALIEN Background Technology.
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3.8
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“NanoBlock Technology”
means Alien NanoBlock™ IC
specifications and formation process, irrespective of the assembly
technology used to convert the chip into the RF Tag, to the extent
constituting ALIEN Background Technology.
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***
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 5
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
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4.1
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“Alliance” means the collaboration between ALIEN and ST
entered into under this Agreement.
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4.2
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“Alliance RFID Products”
means RFID Products compliant with
existing Auto-ID Center specifications and future evolutions
thereof jointly developed by ALIEN and ST within the framework of a
Project using ST process technology.
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4.3
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“Mask
Works” means any
and all masks generated for the manufacturing of the Alliance RFID
Products.
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4.4
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“RFID
Products” means
integrated circuits, tags and/or readers that are targeted to the
Radio Frequency Identification applications.
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4.5
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“Confidential
Information” shall
have the meaning set forth in Paragraph 7.2 of this
Agreement.
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4.6
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“Project” means any project entered into under the
Alliance and governed by a Project Agreement.
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4.7
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“Term” means the period from Effective Date till Expiry
Date of this Agreement.
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4.8
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“Affiliates” means an entity controlling, controlled by or
under common control with ST or ALIEN , at the Effective Date of
this Agreement or thereafter, for so long as such control exists.
For the purposes of this definition, “control” shall
mean direct or indirect possession of greater than 50 % of the
voting rights of such entity or other type ownership interests with
sufficient power to elect or cause the election of a majority of
the Board of Directors or like governing body of such legal
entity.
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5
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Organization
responsible for the execution of this Agreement :
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5.1
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Alliance
administration . Alliance
Coordinators (as designated in Paragraph 5.3) will be responsible
for the successful execution of the Alliance and undertake to meet
at least twice a year to review the operation of this Agreement and
the Projects being executed within its framework. These meetings
will include the Alliance Coordinators and other relevant
executives of both Parties, for example Stavro Prodromou (ALIEN)
and Claude Dardanne (ST), hereafter referred to as the
“Executive Committee”.
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***
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 6
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
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5.2
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Project
Administration . The
Project Agreement for a specific Project shall establish the
organization responsible for the implementation of that Project.
That organization will normally consist of a team comprising senior
management representatives of each Party, and a “Program
Management” team tasked with the management and execution of
the Project.
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5.3
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Alliance
Coordinators .
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5.3.1
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ALIEN
designates the following person as its Alliance
Coordinator:
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Name:
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Thomas M.
Pounds
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Company:
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Alien
Technology Corp.
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Address:
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18220
Butterfield Blvd.
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Morgan Hill, CA
95037 USA
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Phone:
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408-201-7470
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Fax:
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408-782-3908
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5.3.2
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ST designates
the following person as its Alliance Coordinator:
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Name:
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Francis
Dell’Ova
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Company:
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STMicroelectronics
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Address:
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ZI de Rousset
– BP 2
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13106 Rousset
cedex, France
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Phone:
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+33 (0)4 42 68
82 42
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Fax:
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+33 (0)4 42 29
00 68
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5.3.3
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The
responsibility of the Alliance Coordinator for each Party will be
to act as an overall coordinator for cooperation between the
Parties under the Alliance. Each Party will advise the other Party
in writing of any successor Alliance Coordinator.
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6
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Launching of
new Projects:
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6.1
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At any time
during the Term of the Alliance, one Party may make to the other
Party a new Project Request containing the information stated in
Paragraph 6.2 below. New Project Requests should involve activities
to be performed by both Parties within the framework of the
Alliance. This may include: new Alliance RFID Product design and
development, a modification of an existing Alliance RFID Product
for either Party that will require any level of participation from
the other Party, manufacturing and supply activities and joint
marketing efforts.
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***
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 7
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
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6.2
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The Party
issuing a new Project Request shall provide to the other Party the
following information:
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(a)
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Project title
and brief description clearly identifying the application, reasons
for and mutual interests of the Parties in the Project, the
deliverables and estimated duration. Where appropriate, estimates
of chip size, package, customers pricing and volume objectives also
will be included.
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(b)
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Clear
definition of respective responsibilities for each Party to the
Project.
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(c)
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Identification
of risks and any mitigation strategies.
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(d)
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The proposed
organization of the Project.
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6.3
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The Alliance
Coordinators of each Party shall mutually evaluate the feasibility
and interest of the new Project Request. The non requesting Party
will decide in good faith whether it is willing to enter the
Project or not. Prior to starting a new Project, the Parties shall
clearly define the business model(s) applicable for that Project,
including marketing, sales, costing and pricing, logistics related
to the sales of the products as well as the expected sales revenues
and net revenue to be generated.
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7
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Confidentiality and Press
Releases
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7.1
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Non-Disclosure Agreement . The Parties hereby agree to execute a
non-disclosure agreement to protect the confidentiality and limit
the use of any Confidential Information exchanged in connection
with the Alliance and/or within the framework of specific
Projects.
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7.2
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Public
announcement . The
Parties expressly agree that no press release or public disclosure
of the existence and the terms and conditions of the Alliance or
the activities pertaining thereto (including the Projects, Project
Agreements and Alliance RFID Products) can be made without the
prior written consent of the other Party.
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8
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Intellectual
Property Rights Ownership
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8.1
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Background
Technology . ST and ALIEN
will each retain all rights, titles and interests in their
respective Background Technology, including Intellectual Property
Rights therein.
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***
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 8
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
Each Project Agreement may specify
each Party’s major items of Background Technology that are
used in conjunction with the specific Project.
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8.2
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Foreground
Technology . Except as
provided in Paragraph 8.3 below, to the extent that Foreground
Technology does not constitute Joint Foreground Technology, each
Party will solely own all rights, titles and interests in its
respective Foreground Technology, including Intellectual Property
Rights therein.
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Each Project Agreement may specify
in detail the classification and ownership rights of the Foreground
Technology developed in conjunction with the specific
Project.
If either Party desires to file a
patent or any other Intellectual Property Right based upon its
Foreground Technology, it shall notify the other Party prior to any
filing of the proposed filing in reasonable detail.
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8.3
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Joint
Foreground Technology .
The Parties will jointly own all rights, titles and interests in
the Joint Foreground Technology, including Intellectual Property
Rights therein.
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Each Party shall have the undivided
rights and equal interest to exploit such Joint Foreground
Technology, including the right to grant non-exclusive licenses,
without restriction and without providing notice or accounting to
the other Party. The Parties will cooperate with respect to patent
and other Intellectual Property Rights applications and
registrations, maintenance protection and enforcement thereof, for
Joint Foreground Technology. All Joint Foreground Technology to the
extent constituting Confidential Information when the Joint
Foreground Technology is made will be maintained confidential by
both Parties unless otherwise agreed in writing; all such
Confidential Information in written or any other tangible form
shall be marked “ST-ALIEN Confidential”. This shall
not, however, prohibit either Party from exploiting such
information, including without limitation, incorporating the
corresponding technology into products, or disclosing the
information, in confidence, to third parties, subject to prior
signature with any such third parties of a non-disclosure agreement
containing terms and conditions similar to those of the
non-disclosure agreement attached in Exhibit A hereto. If either
Party desires to file a patent or any other Intellectual Property
Right based upon the Joint Foreground Technology, it shall notify
the other Party prior to any filing of the proposed filing in
reasonable detail. The Parties shall share equitably the expenses
associated with the first and further filings of patent
applications of such Joint Foreground Technology as well as with
the maintenance of such applications and the patents granted
thereon. However, in the event one of the Party elects not to seek
or intends to
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 9
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
abandon Intellectual Property Rights
in respect to any such Joint Foreground Technology in any
particular country or elects not to share equitably in the expenses
thereof with the other Party, that other Party shall have the right
to apply for or maintain such Intellectual Property Rights at its
own expense in such country and shall have full ownership and
control over the prosecution, maintenance and licensing thereof in
accordance with the terms of this Agreement. The Party which has
decided to abandon its involvement as aforesaid (and, in the case
of ST, ST’s Affiliates) will be licensed to use or have used
for its own purposes the Joint Foreground Technology concerned
provided this Party complies with the confidentiality obligations
set out in Paragraph 7 to the extent the Joint Foreground
Technology constitutes Confidential Information of the other Party.
This license will be a worldwide, royalty-free, fully paid up,
personal, limited, non-exclusive, nontransferable,
nonsublicensable, license to make, have made, use, import, offer to
sell, and sell any products and item, and to practice any method or
process under the Joint Foreground Technology and to reproduce,
distribute and create derivative works of, and otherwise exploit
the Joint Foreground Technology.
For the avoidance of doubt, neither
Party may file a patent or any other Intellectual Property Rights
over the good faith and duly justified objection of the other if
the patent discloses and would reveal Confidential Information of
the other Party.
Each Project Agreement may specify
in detail the classification and ownership rights of the Joint
Foreground Technology developed in conjunction with the specific
Project.
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8.4
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Cooperation
for filing or prosecuting applications for patents
. Each Party agrees that, without
charge to the other Party, it will and will have its employees sign
all papers and do all acts which may be necessary, desirable or
convenient to enable the filing Party at its expense to file and
prosecute applications for patents on the Technology that is
developed or conceived during work within the scope of and pursuant
to this Agreement or the relevant Project Agreement, and to
maintain patents granted thereon. In addition, each Party agrees to
acquire from its employees such assignments, rights and covenants
to assure the other Party that it shall receive the rights provided
in this Paragraph 8. Employees of each Party performing the
Development Program shall not collaborate with third parties in
performing the Development Program without the other Party’s
prior written consent
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Ownership of Mask
Works . Nothwithstanding
any contrary provision in this Agreement, all Mask Works constitute
ST Foreground Technology and shall be the sole and exclusive
property of ST including the exclusive rights to protect, register,
prosecute and defend such Mask Works.
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***
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 10
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
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9.1
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Licenses for
performance of Project Agreements . Unless a Project Agreement specifies
otherwise, each Party (“Licensor”) hereby grants the
other Party (including in the case of ST, ST’s Affiliates)
(“Licensee”) a non-exclusive, personal,
non-transferable, royalty free, worldwide license under
Licensor’s Background and Foreground Technology (and
Intellectual Property Rights therein) to the extent necessary to
carry out Licensee’s obligations under a specific Project
Agreement entered into under this Alliance and only for the
duration of the Project Agreement.
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Each Party receiving Background or
Foreground Technology from the other Party undertakes to keep such
Technology strictly confidential in accordance with the provisions
of Paragraph 7 of this Agreement.
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9.2
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Licenses for
exploitation of Technology developed under the Alliance
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In conjunction with Project
Agreements, ALIEN agrees to grant irrevocable permission to ST and
its Affiliates to sell or have sold the Alliance RFID Products to
any third party customer. In order to give effect to the foregoing,
ALIEN will grant ST and its Affiliates, a worldwide, perpetual,
royalty free, fully paid up, license under any ALIEN proprietary
Technology (such as but not limited to ALIEN Background and
Foreground Technology as defined herein but excluding the NanoBlock
Technology and FSA Technology unless specifically called for in a
Project Agreement), including the Intellectual Property Rights
therein to the extent necessary for ST and its Affiliates, to
design, develop, have designed, have developed, manufacture, have
manufactured, commercialize (directly or through its distribution
channel) to any third party the Alliance RFID Products. For the
avoidance of doubt, ST and ALIEN will negotiate and execute Project
Agreement(s) reflecting the terms set forth in this Paragraph 9.2
(a). It is anticipated that such Project Agreement(s) will contain
customary provisions in addition to, but consistent with, the terms
set forth in this Alliance Agreement.
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10
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Effective
Access to Background Technology
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10.1
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As a basic part
of this Alliance, the Parties will jointly develop Alliance RFID
Products based on certain ST process technology.
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***
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 11
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
The ST process technology required
under each specific Project as well as the modalities of effective
transfer and support will be mutually determined by the Parties in
the relevant Project Agreement.
ST will secure ALIEN’s timely
access to such mutually determined ST process technology subject to
the terms and conditions of Paragraph 9.1 above.
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10.2
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As a basic part
of this Alliance, the Parties will jointly develop Alliance RFID
Products based on ALIEN know-how related to low-cost RFID products
(IC, tags, and reader) which operate according to the Auto-ID
Center specifications and also related to their corresponding IC
implementation and related to very low cost assembly
process.
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The aforementioned ALIEN know how
required under each specific Project as well as the modalities of
effective transfer and support will be mutually determined by the
Parties in the relevant Project Agreement.
ALIEN will secure ST’s timely
access to such commonly determined ALIEN know how subject to the
terms and conditions of Paragraph 9.1 above.
The costs and expenses for all
design and development activities carried out pursuant to the
Alliance and the payment terms and conditions thereof will be
defined in each Project Agreement.
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12
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Manufacturing and Supply
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12.1
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Manufacturing for and supply to ALIEN
. Any and all Alliance RFID Product
shall be manufactured exclusively by ST or its Affiliates (either
directly or through ST’s subcontractors) and sold by ST to
ALIEN pursuant to terms and conditions to be agreed upon in
specific Project Agreements. The rules governing Alliance RFID
Products discontinuance will be defined in the appropriate Project
Agreements.
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12.2
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Manufacturing for and supply to a third
party . ST and its
Affiliates may manufacture and sell, directly or indirectly, any
and all Alliance RFID Product to third parties.
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***
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 12
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
This Agreement shall become
effective as of its signature by both Parties (the “Effective
Date”) and expire on December 31, 2006 (the
“Expiry Date”) unless earlier terminated in accordance
with Paragraphs 14 or 15.7 below.
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14.1
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Events of
termination of this Agreement . This Agreement may be terminated subject to
thirty days (30 days) prior written notice, in the following
cases:
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(a)
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by either Party
upon failure by the other Party to comply with any material
obligation under this Agreement, provided that such failure has not
been corrected or remedied within thirty days (30 days) of a notice
to that effect by the terminating Party.
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(b)
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by either
Party, if a controlling interest of the voting stock of the other
Party is acquired by, or if the other Party merges with, or if a
majority of the assets of the other Party is acquired by, a
competitor or potential competitor of the terminating
Party.
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In addition, either Party may
terminate this Agreement without prior notice or
formality:
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(c)
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if the other
Party ceases its activities or becomes subject to a voluntary or
involuntary petition in bankruptcy to the extent permitted by the
applicable law.
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(d)
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if the other
Party materially breaches the confidentiality obligations contained
herein.
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Finally, Alien may terminate this
Agreement without prior notice or formality:
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(e)
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if the Parties
fail to execute two Agreements, namely, a Joint Development
Agreement and Letter of Intent specifying at least the wafer price,
allocation, and duration of a Wafer Supply Agreement, by
June 30, 2003. Neither Party shall have claims or actions
whatever against the other Party, in particular for damages based
upon a failure by such other Party to proceed to execution of
aforementioned Project Agreements.
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14.2
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Termination
of Project Agreements .
Termination of a Project Agreement does not terminate this Alliance
Agreement. If this Alliance Agreement is terminated, the
termination provisions of each Project Agreement shall define the
effect of such termination.
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***
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 13
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
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14.3
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Survival . All provisions of this Agreement that, by
their nature, are intended to survive any termination or expiration
of this Agreement will survive any such termination or expiration.
In particular, the confidentiality terms of Paragraphs 1 and 7
above as well as the provisions of Paragraphs 3, 4, 8, 9.2, 14, 15
and 16.2 will survive any termination or expiration of this
Agreement.
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14.4
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Effect of
Termination under Paragraph 14.1 (e). If the Alliance Agreement is
terminated pursuant to Paragraph 14.1 (e), all activities currently
underway shall cease. The Parties shall return all Confidential
Information of the other Party within five (5) business days
of this termination. The Parties shall have no other obligations or
liability to each other as a result of such termination.
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15
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Limited
Warranty and Liability
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15.1
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Both ALIEN and
ST warrant that:
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(a)
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each has the
right to disclose to each other or use, without liability to
others, all subject matter, including ideas, inventions whether
patented or not, creations, works, processes, designs and methods
that one party will disclose or use in its performance of this
Agreement;
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(b)
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each has the
full power to enter into this Agreement, and to carry out its
obligations under this Agreement;
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NO WARRANTIES OR REPRESENTATIONS,
WHETHER EXPRESS OR IMPLIED, STATUTORY OR OTHERWISE, INCLUDING BUT
NOT LIMITED TO, ANY IMPLIED WARRANTIES OF MERCHANTABILITY,
NON-INFRINGEMENT OR FITNESS FOR A PARTICULAR PURPOSE, ARE GIVEN by
ST for samples and prototypes delivered to ALIEN under a Project.
ST shall not be liable for any damages resulting from any use or
application of such samples and prototypes made by ALIEN. Once
Alliance RFID Products are qualified by ST and ALIEN and volume
production is launched, ST and/or its Affiliates will supply the
Alliance RFID Products under the terms and conditions of the
appropriate supply Agreement.
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15.2
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EXCEPT IN THE EVENT OF GROSS
NEGLIGENCE, WILLFUL MISCONDUCT, OR BREACH OF THE CONFIDENTIALITY
OBLIGATION SET OUT IN PARAGRAPH 7 HEREIN, NEITHER PARTY
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***
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 14
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
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SHALL HAVE ANY LIABILITY TO THE
OTHER PARTY, ITS SUBCONTRACTORS, CLIENTS OR ANY THIRD PARTY FOR
COSTS OF SUBSTITUTE PRODUCT(S) OR SERVICES, OR FOR INCIDENTAL,
CONSEQUENTIAL, INDIRECT, SPECIAL OR PUNITIVE DAMAGES, INCLUDING
WITHOUT LIMITATION SUCH DAMAGES OR LIABILITIES FOR LOSS OF REVENUE,
LOSS OF BUSINESS, FOR FRUSTRATION OF ECONOMIC OR BUSINESS
EXPECTATIONS, LOSS OF PROFITS, LOSS OF DATA, OR COST OF CAPITAL,
WHETHER IN CONTRACT, TORT (INCLUDING NEGLIGENCE), WARRANTY OR
OTHERWISE, ARISING IN ANY WAY OUT OF OR RELATING TO THIS AGREEMENT
OR UNDER ANY PROJECT AGREEMENTS, EVEN IF ANY REPRESENTATIVE OF A
PARTY HERETO HAD BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.
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15.3
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EXCEPT IN THE
EVENT OF GROSS NEGLIGENCE, WILLFUL MISCONDUCT, OR BREACH OF
CONFIDENTIALITY OBLIGATIONS SET OUT IN PARAGRAPH 7 HEREIN TOTAL
CUMULATIVE LIABILITY ARISING OUT OF OR IN CONNECTION WITH THIS
AGREEMENT OR UNDER A DEVELOPMENT AGREEMENT, WHETHER IN CONTRACT, IN
TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, WILL NOT EXCEED 1,000 USD
(ONE THOUSAND US DOLLARS) FOR EITHER PARTY.
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For the avoidance of doubt, supply
agreements that the Parties may enter into, from time to time,
pursuant to the Alliance for the sales and purchase of fully
qualified Alliance RFID Products will be governed by the limitation
of liability clauses set out in such sales agreements and will not
be subject to the limited liability provision contained in this
Paragraph 15.3.
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15.4
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NEITHER PARTY
MAKES ANY WARRANTY OF NON-INFRINGEMENT OF INTELLECTUAL PROPERTY
WITH RESPECT TO THE ST OR ALIEN IP RIGHTS.
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16.1
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Copyright
Notices - Markings .
Unless stated otherwise in this Agreement, each Party will ensure
that all copyright notices that are marked on or included in any
portion of information, software or documentation, in any form,
that is furnished to that Party under this Agreement will be marked
on or included at least once in each copy made by or for that
Party.
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In order to protect the rights of
the other Party, each Party agrees not to remove or delete any
proprietary or confidential legend or marking of the
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***
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 15
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
other Party, on any information or
item transferred to it by the other Party, and any copy or
derivative work of such item or information.
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16.2
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Dispute
Resolution .
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16.2.1 The Alliance Coordinator from
each Party will negotiate in good faith to resolve any dispute
between them regarding this Agreement. If such negotiations do not
resolve the dispute to the satisfaction of both Parties then the
resolution process will be escalated to the Executive Committee.
The Executive Committee shall meet at least once in an attempt to
resolve the dispute. This meeting is a required prerequisite before
either Party may seek resolution of the dispute through arbitration
pursuant to Paragraph 16.2.2 below. The Parties may agree to pursue
any other additional mutually acceptable dispute resolution method
but such pursuit will not modify the above-stated
prerequisite.
16.2.2 Any dispute that cannot be
amicably solved pursuant to the provisions of Paragraph 16.2.1
above shall be finally settled under the Rules of Conciliation and
Arbitration of the International Chamber of Commerce by one or more
arbitrators appointed in accordance with the said Rules. All
arbitrator(s) appointed must have knowledge by education or
experience of the manufacture and distribution of semiconductors.
Such arbitration shall take place in Geneva if initiated by ALIEN
and in San José if initiated by ST and shall be conducted in
English. Swiss Law shall be applicable without reference to its
conflict of laws principles.
16.2.3 Notwithstanding any other
statement in this Paragraph 15.2, either Party may seek immediate
injunctive or other relief related to the breach of the
confidentiality obligation stated in Paragraph 7 above.
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16.3
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Employees . Each Party will remain responsible (e.g., with
regard to salaries, expenses, transportation, housing, taxes,
workers compensation, performance evaluations) for its own
employees while they are present at the other Party’s
facility. Each Party’s employees will remain employees of
that Party while they are present at the other Party’s
facility and will not be considered to be employees, contractors,
agents, or the like, of the other Party. A Party’s employees
will conduct themselves in a professional manner while present at
the other Party’s facility and will comply with the other
Party’s reasonable management procedures. The other Party
will provide the visiting employees with reasonable desk space,
office facilities and office support. A Party may remove and
restrict from its premises an individual who does not comply with
the provisions of this Agreement.
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16.4
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Entire Agreement
. This Agreement sets forth the
entire agreement and understanding between the Parties as to its
subject matter and merges all prior discussions between them.
Neither of the Parties will be bound by
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***
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Confidential
treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the
Commission.
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Confidential
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Page 16
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6/16/2003
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CONFIDENTIAL TREATMENT REQUESTED
BY ALIEN TECHNOLOGY CORP.
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any conditions, definitions,
warranties, understandings, agreements, or representations, whether
written or oral, with respect to such subject matter other than as
expressly provided in this Agreement or as duly set forth on or
subsequent to the effective date of this Agreement in writing and
signed by a duly authorized representative of each
Party.
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16.5
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Execution
And Modification. Execution of this Agreement will be by signature
of an authorized representative of each Party. This Agreement may
only be modified in a writing executed by authorized
representatives of both Parties.
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16.6
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Export
Restrictions. Each Party
will comply, at its own expense, with all applicable federal, state
and local laws, regulations and ordinances including, but not
limited to, the regulations of the U.S. Government relating to
export and re-export of any (a) software or technology that is
provided or licensed under this Agreement, or any
(b) technical information, or direct product of such technical
information, that is provided by the other Party under this
Agreement, or any (c) product that is provided under this
Agreement. The purchaser of any product provided under this
Agreement agrees that it is responsible for obtaining required
government documents and approvals prior to export and re-export of
any commodity, machine, software or technical data. In addition,
the purchaser of any product provided under this Agreement warrants
that such products are not for space or missile use, and do not
relate to radiation hardened design, circuitry, manufacturing or
testing.
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16.7
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Force
Majeure. Neither Party
will be liable in damages or have the right to cancel or terminate
this Agreement, in whole or in part, for any delay or default in
performance hereunder if such delay or default is caused by
unforeseen conditions or conditions beyond the control of the
delaying or defaulting Party (including but not limited to acts of
God, terrorism, government restrictions, continuing domestic or
international problems such as wars or insurrections, strikes,
fires, floods, work stoppages and embargoes). Either Party will
have the right to terminate this Agreement upon sixty
(60) days prior written notice if the delay or default of the
other Party due to any such cause continues for a period of six
(6) months. Each Party will give the other prompt written
notice of any such condition likely to cause any delay or
default.
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16.8
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Non-exclusive cooperation.
This Agreement will not prevent
either Party from (a) entering into an agreement similar to it
with any third party or (b) developing, manufacturing and/or
selling any product or service which can compete with the other
Party’s products or services in the marketplace, or with the
products developed by the Parties under this Agreement.
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***
|
Confidential
treatment requested pursuant to a request for confidential
tre
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